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Monday, 27 July 2015

This Kat for a number of years taught a course on legal aspects of IP transactions. Consistently, the most challenging case to convey to students was the U.S. Supreme Court decision of Brulotte v Thys Co. (379 U.S. 29 (1964)), which fixed a bright-line rule that a patentee cannot charge royalties for the use of its invention after the expiry of the patent. The Court held that because such an agreement had the effect of extending "the patent liability beyond the period", such an agreement was held "unlawful per se". I always found this decision difficult to explain, because it straddled in an unsatisfying way a consideration of patents as an IP right, competition law concerns regarding the potentially anticompetitive effects of exercising a patent and commercial arrangements for the pricing and timing of royalty payments. Against this backdrop and after the passing of a half century, this Kat hoped that the U.S. Supreme Court, in revisiting the issue in the case of Kimble v Marvel Entertainment, LLC (as reported by AmeriKat on June 30th), would provide some clarity. Alas, it did not. In so not doing, permit this Kat some further thoughts on this most frustrating of Supreme Court IP-related rules.

To recall, the Kimble court, in considering the ongoing obligation of Marvel to a royalty with respect to the Spider-Man toy, chose not to abandon the bright-line rule fixed in Brulotte in favour of a case-by-case analysis based on the "rule of reason" approach used in antitrust (what the Americans call competition law) cases. In a 6-3 decision, the majority opinion, authored by Justice Kagan, framed the case as a question of stare decisis, namely the principle "that today's Court should stand by yesterday's decisions" unless there is "a special justification—over and above the belief 'that the case was wrongly decided'." The opinion quoted the oft-noted words of Justice Brandeis, written in a dissenting opinion no less, that is usually "important that the applicable rule of law be settled than it be settled right." The upshot of the majority ruling is to leave the Brulotte rule in place.

To which Justice Alito, for the dissent, wrote a stinging rebuke:

"[The Brulotte] decision was not based on anything that can plausibly be regarded as an interpretation of the terms of the Patents Act. It was based on an economic theory—and one that has been debunked. The decision interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent, and it disrupts contractual expectations. Stare decisis does not require us to retain this baseless and damaging precedent."

He continued:

"Brulotte was thus a bald act of policymaking. It was not simply a case of incorrect statutory interpretation. It was not really statutory interpretation at all."
"Not only was Brulotte based on policymaking, it was based on a policy that is difficult to defend. Indeed, in the intervening 50 years, its reasoning has been soundly refuted."

What comes to mind to this Kat in reading the majority and dissenting opinions in the Kimble case is the image of judicial ships passing at night, so much so that one has to remind himself that both are addressing the same case. Partially because this Kat is sympathetic to the position articulated by the dissent, partially because he recalls his frustration in seeking to explain the Brulotte decision to students (and clients), he is especially disappointed with the majority opinion. In a word, this Kat has the sense that no set of facts or arguments could have constituted the "special circumstances" required to overcome stare decisis in this situation. Consider the main points in their decision.

1. The Court should be especially wary in overturning a precedent when the precedent is based on construing a statute; there always exists the possibility to take one's objections to Congress.
2. Indeed, Congress has rebuffed several opportunities to overturn Brulotte.
3. Since property and contract issues are also implicated, there is even a greater reluctance to overturn a precedent, given reliance on the principle in day-by-day affairs.
4. There has been no change to the patent laws with respect to the issue under consideration.
5. The Brulotte rule is simple to understand and easy to apply.
6. Since this case is about the patent laws and not the antitrust laws, even if the Brulotte case relied on misconceived economics (especially anti-competitive tying arrangements), it is for Congress to rectify it.
7. Moreover, Kimble's arguments that the Brulotte decision is bad policy, suppresses technological innovation and harms parties from reaching agreements that best enable them to commercialize their inventions, are not supported by empirical evidence and, in any event, are the purview of Congress and not the Court.

Kat readers are invited to read the opinion and reach their own conclusions—this Kat standing behind his impression that nothing could have changed the mind of the majority, despite the wide dissatisfaction with both the rationale and implementation of the Brulotte rule. And so the question is how do we account for this? Perhaps some insight can be gotten from a consideration of the unusual composition of the majority opinion, comprised of the four so-called liberal Justices, Breyer, Ginsburg, Sotomayor and Kagan, joined by arch-conservative Justice Scalia and perennial swing vote Justice Kennedy. In considering this composition, it seems to this Kat that three different considerations were at work. For the four liberal justices, their position can be understood as giving expression to the longstanding liberal fear of "over-extending" IP rights, especially patents, given the anticompetitive effects that in their view lurk in the exercise of patent rights. Indeed, the Brulotte decision, with its strong strand of antitrust-like considerations, reflected this approach back in 1964. While the hostility to patents that characterized the Warren Court of those days has subsided, it has not disappeared and the concern over patent trolls has reinvigorated this tendency. Cutting back on Brulotte would have run counter to this orientation.

As for the position of (this Kat's law professor of a time long ago) Justice Scalia, the impetus seems to derive from Justice Scalia's deeply rooted judicial conservatism rather than any concern with the scope of IP rights and their exploitation (or how the Brulotte rule has worked in practice). What is interesting is how he split ranks from the other three so-called conservative justices, Chief Justice Roberts, and Justices Thomas and Alito, who focused on what they viewed as the deeply flawed and anachronistic foundations that undergird the Brulotte decision. Justice Scalia seems to ignore these factors in favour of doctrinal considerations, which brought him to the same result as his liberal colleagues. Justice Kennedy has been distinguished by his relative lack of ideology as the guiding principle in his decision-making. On this basis, it would seem that he was simply convinced, under the facts of the case, that there was no compelling reason to overturn the Brulotte rule.

Thus not only does the Kimble majority make for strange judicial bedfellows, but it points to the role of ideology when the matter at issue goes beyond the traditional realm of patent law and seeks to embrace concerns such antitrust and contract law as well. To the extent that future patent cases before the Supreme Court will increasingly implicate such additional legal matters, we can expect further split decisions resting on strong differences in underlying orientation, leading to constant shifts in the composition of the majority and minority opinions.

An interesting read indeed, although the "gee this is a surprise" angle is a bit over the top.

Us patent folk in the states have known for a very long time that the Court has their own agenda when it comes to patent law matters.

There is a very good reason why our Founding Fathers expressly made statutory law that is patent law the sole domain of the legislative branch. While other areas of law like torts and contracts are more open to common law development, patent law is expressly not so (at least for those of us in the US, that is).

Kat readers are invited to read the opinion and reach their own conclusions—this Kat standing behind his impression that nothing could have changed the mind of the majority, despite the wide dissatisfaction with both the rationale and implementation of the Brulotte rule. And so the question is how do we account for this?

I really fail to see the problem.Yes, the majority opinion is pretty clear about there not being any "missed" arguments that could have changed their mind. Why would that be bad?

The Court makes clear that one should complain to Congress.

Just look at it this way: even though the Brulotte rule was not originally in the statute, now that 50 years have passed and Congress has passed up many opportunities to overturn it, it has effectively achieved the status of an explicit statutory provision. The Court has no authority to rewrite the statute. So Brulotte must stand. Whether the Court likes the rule or not is irrelevant (unless the dislike can be couched in constitutional language, not the case here).

I do not believe much is ideology involved in this decision. Unlike in many other areas of law, patent law is not one where the current SCOTUS is almost by definition divided along ideological lines. KSR was 9-0, Bilski was 9-0, Alice was 9-0, Nautilus was 9-0, just to name a few.

"Clean up your own mess" carries with it a rather easy read of responsibility for one's own actions. This would have been a perfect play (the Court taking responsibility for its own actions), seeing the subject matter and the application of Uncle Ben's advise - but instead, we had the Court pass the buck and even admitting that the "Brulotte rule" was wrong, they want someone else to clean up their past actions.

It is beyond parody to suggest that the Court's own writing cannot be something that the Court cannot change. If it has no authority to write the law, then the original ruling should be tossed on that line of thinking alone. One does note even need to reach a "constitutional" issue.

As for the so-called "lack of ideology," the commentator is blind to the actual battle underway - the battle of which branch has been sanctioned to write patent law.

Since Anonymous at 01:23 is familiar with several US cases, I can safely presume that he or she is also familiar with the direct allocation in our Constitution as to which branch has the authority, and is also familiar (since there is an apparent interest in patent law) with the notion that patent law is statutory law and not common law. I have to believe that the notion of "not much ideology involved" is rather disingenuous. That or amazingly off-point. Either way, the view is not supportable.

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